from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in Nos. 95/002, 189, 95/002, 204.
F. LoCascio, Kirkland & Ellis LLP, Washington, DC, argued
for appellant. Also represented by William H. Burgess, Noah
Samuel Frank; Joseph Michael Skerpon, Banner & Witcoff,
Ltd., Washington, DC.
A. Kromholz, Ryan, Kromholz & Manion, S.C., Milwaukee,
WI, argued for appellee Mexichem Amanco Holding S.A. de C.V.
Also represented by Patrick J. Fleis.
Anthony F. Lo Cicero, Amster, Rothstein & Ebenstein LLP,
New York, NY, argued for appellee Dai-kin Industries, Ltd.
Also represented by MARION P. Metelski.
LOURIE, Reyna, and WALLACH, Circuit Judges.
LOURIE, CIRCUIT JUDGE.
International, Inc. ("Honeywell") appeals from a
decision of the U.S. Patent and Trademark Office ("the
PTO") Patent Trial and Appeal Board ("the
Board") affirming the Examiner's rejection, in two
merged inter partes reexaminations, of claims 1-26,
31-37, 46-49, 58, 59, 61-68, 70-75, 80, and 81 of U.S. Patent
7, 534, 366 ("the '366 patent") under 35 U.S.C.
§ 103. See Mexichem Amanco Holding S.A. De C.V. v.
Honeywell Int'l Inc., No. 2015-006430, 2016 WL
1254603 (P.T.A.B. Mar. 29, 2016)
("Decision"). Because the Board erred in
its analysis, and hence its decision, we vacate and remand.
owns the '366 patent, which is directed to the use of 1,
1, 1, 2-tetrafluoropropene ("HFO-1234yf')-an
unsaturated hydrofluorocarbon ("HFC") compound-and
a polyalkylene glycol ("PAG") lubricant in heat
transfer systems, such as air conditioning equipment.
See, e.g., '366 patent col. 13 11. 37-45. Claim
1 is illustrative and reads as follows:
A heat transfer composition for use in an air conditioning
(a) at least about 50% by weight of 1, 1, 1,
2-tetrafluoropropene (HFO-1234yf) having no
substantial acute toxicity; and
(b) at least one poly alkylene glycol lubricant in
the form of a homopolymer or co-polymer consisting of 2 or
more oxypropylene groups and having a viscosity of from about
10 to about 200 centistokes at about 37 °C.
Id. (emphases added).
Amanco Holding S.A. DE C.V. ("Mexichem Amanco") and
Daikin Industries, Ltd. ("Daikin") (together,
"Mexichem") filed requests for inter
partes reexamination of the '366 patent, which the
PTO granted and merged into a consolidated proceeding. During
the reexamination, the Examiner rejected claims 1-26, 31-37,
46-49, 58, 59, 61-68, 70-75, 80, and 81 of the '366
patent as obvious over Japanese Patent H04-110388
("Inagaki") in view of either: (1) U.S. Patent 4,
755, 316 ("Magid"); (2)Acura Service Bulletin No.
92-027 ("Acura") and "Patentee's
Admissions"; or (3) U.S. Patent 6, 783, 691
("Bivens"). The Examiner found that Inagaki
expressly discloses HFO-1234yf and that each of the secondary
references-Magid, Acura/Patentee's Admissions, and
Bivens-teaches the use of PAG lubricants with HFC
refrigerants. Thus, the Examiner concluded that the claims
would have been obvious over the cited prior art at the time
appealed to the Board, arguing that Inagaki does not teach
the use of HFO-1234yf with any particular lubricant, much
less a PAG lubricant, and that such a combination would not
have been obvious to one of ordinary skill in the art.
See Decision, 2016 WL 1254603, at *5. Honeywell
argued that Inagaki does not teach or suggest the use of a
PAG lubricant with HFO-1234yf because it teaches that the HFO
refrigerants can be combined with other, less
environmentally-friendly refrigerants, in order to
"improve solubility, " thereby indicating that it
teaches the combination of HFO refrigerants with
immiscible lubricants, such as those commonly
employed in the prior art. See id. Further,
Honeywell argued that Magid, Acura, and Bivens use
"HFC" to refer only to saturated HFC
refrigerants, not unsaturated (i.e., HFO)
refrigerants. See id. at *6.
submitted evidence that HFO refrigerants were disfavored at
the time of the invention by those of skill in the art in
that they were known to be reactive and unstable, and that
PAG lubricants were also understood to be hygroscopic and
thus unstable. See id. Therefore, Honeywell argued,
one of ordinary skill would not have been led by Inagaki to
combine HFO-1234yf, one of a disfavored class of
refrigerants, with a PAG lubricant, known to be unstable. It
argued that one of ordinary skill would have expected the
combination to result in peroxide formation that leads to
degradation reactions of HFO compounds that are not possible
with the prior art saturated HFC compounds. See id.
Honeywell also submitted evidence of secondary
considerations-namely, the unexpected stability of HFO-1234yf
in combination with PAG lubricants over other similar
refrigerants combined with PAGs; long-felt but unmet need for
compositions having certain environmentally-favorable
characteristics; and skepticism that such an
environmentally-friendly compo- sition existed, particularly
one that also exhibits other desirable properties, such as
low toxicity, stability, reactivity, and effectiveness.
Board affirmed the Examiner's rejection of claims 1-26,
31-37, 46-49, 58, 59, 61-68, 70-75, 80, and 81 of the
'366 patent as obvious. First, the Board found that PAGs
were known lubricants for "HFC-based refrigeration
systems, " as evidenced by Magid, Acura/Patentee's
Admissions, and Bivens. Id. at *9. Thus, the Board
concluded, because Inagaki teaches that the disclosed
refrigerants, including HFO-1234yf, "do not have any
problem with respect to their general characteristics (e.g.,
compatibility with lubricants . . .), " it
would have been obvious to combine HFO-1234yf with
"known lubricants" such as PAGs. Id. at
*10 (emphasis added) (internal quotation marks omitted). The
Board explained that the known drawbacks of using HFO-1234yf,
such as toxicity, flammability, reactivity, and so forth,
would not have deterred one of ordinary skill from choosing
HFO-1234yf, as taught by Inagaki, because such disadvantages
would have been viewed as merely a "tradeoff for the
benefits touted by Inagaki-namely, "good cooling with
little effect on the ozone." Id. at *8.
Further, the Board found that, because PAGs were known
lubricants, one of ordinary skill motivated to use HFO-1234yf
based on the teachings of Inagaki would have arrived at its
combination with a PAG lubricant by mere routine testing.
Id. at *10.
the Board rejected Honeywell's argument that the claimed
combination would not have been obvious because of the
unpredictability of finding suitable lubricants for
unsaturated HFO refrigerants based on information
pertaining to saturated HFC refrigerants, or in
light of the unexpected stability and miscibility of
HFO-1234yf with PAG lubricants. Id. The Board found
that Inagaki expressly discloses HFO-1234yf as possessing
ozone-friendliness and other favorable characteristics for
use in heat transfer compositions, and that its stability and
miscibility with a PAG lubricant are properties that are
"inherent to the refrigerant." Id. at *7-8
(emphasis in original). Thus, the Board concluded, the
stability and miscibility of HFO-1234yf with a PAG lubricant
are "inherent properties of an otherwise known
refrigerant" that could not confer patentable weight to
the claimed mixture. Id. (emphasis added).
the Board found Honeywell's evidence of secondary
considerations to be unpersuasive because of a perceived lack
of nexus between the evidence and the claimed composition.
Id. at *11. The Board explained that most of
Honeywell's evidence shows that a "particular
refrigerant" possessed desirable properties
long sought after in the art, but that the
refrigerant-HFO-1234yf- was known in the art. Id. at
*12 (emphasis in original). Because the claims are directed
to the combination of HFO-1234yf with a PAG
lubricant, the Board concluded that Honeywell's evidence
lacked a nexus to the claimed composition. See id.
Board also rejected Honeywell's evidence of unexpected st
ability /miscibility of the claimed combination in light of
JP H5-85970A ("Omure"). The Board disagreed with
the Examiner, who reasoned that Honeywell's evidence of
unexpected stability "do[es] not contradict the fact
that stability is an inherent property of the
refrigerant/lubricant pair." Id. at *13
(emphasis added) (internal quotation marks omitted). The
Board acknowledged that "[e]ven inherent properties, to
the extent that they demonstrate results beyond what would
have been expected to one of ordinary skill in the art,
particularly superior results that demonstrate more than a
mere improvement in a property, are evidence that the
invention is non-obvious and must be considered
accordingly." Id. (citing In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997)).
Board found Honeywell's evidence to be un-persuasive
because Omure states that a different unsaturated propene HFO
compound has "relatively superior thermal
stability" in PAG. Id. (internal quotation
marks omitted). Thus, the Board concluded that, although
Honeywell's evidence persuasively shows the
unpredictability of "how various refrigerants
would have reacted with various lubricants, " Omure
provides evidence that one of skill in the art
"would no more have expected failure with
respect to the stability of combining [HFOs] with PAG
than would have expected success." Id. at *14
(emphases added). Thus, the Board found that, due to the
"overall unpredictability as to stability in the art,
" one of ordinary skill would have arrived at the
claimed combination by mere routine testing. Id. at
timely appealed to this court. We have jurisdiction pursuant